# Petition for A Writ of Certiorari — Smith v. General Foundry Machine Co.

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Petition for A Writ of Certiorari
- **Published:** January 1, 1949
- **Citation:** 338 U.S. 869

## Text

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IN THE

| Supreme Court of the United States

| ae Ocrosper TERM, 1949

Forrest H. Smiru, et al.,

Petitioners,
vs.

GeneRAL Founpry Macurne Company,
INCORPORATED, et al.,
Respondents.

PETITION FOR WRIT OF CERTIORARI AND
BRIEF IN SUPPORT THEREOF

v
CiareNnce M. FisHeEr,

W. Brown Morton,
Counsel for Petitioners.

INDEX

PAGE
Petition for Writ of Certiorari:

Summary Statement of the Matter Involved .... 2

NNO GA eas Chk s We anh Cha web Ooh c ma tees 8
SL INE GA 6 Waa Washo ane bon bsane'c cae 8
Reasons for Granting the Writ ................ 9

Brief in Support of Petition for Writ of Certiorari:
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Cases CITED

Graver Tank & Mfg. Co., Inc. v. Linde Air Products

i ce cac ee cub acunckaan ass 5, 11

Frederick Hart & Co., Inc. v. Recordgraph Corpora-
viel 169 F. 2d 580, 581 (C. C. A. 3)

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IN THE

Supreme Court of the Ruited States

Ocrosper TERM, 1949

+
v

Forrest H. Smiru, et al.,
Petitioners,
vs.

GENERAL Founpry MacuIneE CoMPany,
INCORPORATED, et al.,
Respondents.

—*
v

PETITION FOR WRIT OF CERTIORARI

To THe Honorasite, THE CuHrer JUSTICE AND ASSOCIATE
JUSTICES OF THE SUPREME Court or THE UNITED
STATES:

Your petitioners, Forrest H. Smith, et al., pray that a
writ of certiorari issue to the United States Court of Ap-
peals for the Fourth Circuit to review the judgment of that
court in this cause filed May 6, 1949 (R. 143). <A petition
for rehearing was denied on June 13, 1949 (R. 149).

A certified transcript of the record in this case, includ-
ing the proceedings in the Court of Appeals, is furnished
herewith in compliance with Rule 38 of the Rules of this
Court.

Summary Statement of the Matter Involved

This action arose as an action by petitioners charging
respondents with infringement of claims 1, 2 and 3 of
petitioners’ patent No. 1,811,980, dated June 30, 1931, and
claim 3 of petitioners’ patent No. 2,051,348, dated August
18, 1936, relating to drying houses for curing tobacco.

Respondents, on the 2nd day of July, 1948 filed a motion
for summary judgment (R. 26) on the grounds that
the claims relied upon by respondents had not been in-
fringed by respondents. The question of the validity of
the claims was not raised by the motion.

The construction of respondents’ drying house alleged
to constitute the infringement was sufficiently disclosed
by the affidavits and accompanying photographs and prints
filed in connection with the motion.

Petitioners contended before the lower Court and also
before the Court of Appeals of the Fourth Circuit that
on a motion for summary judgment involving merely the
question of infringement and not the question of validity,
the sole question presented was whether or not the lan-
guage of the claims construed in accordance with the
plain import of their terms, so limited the claims as to
exclude respondents’ structure. In other words, that for
the purpose of the motion the claims must be considered
as valid and of a scope commensurate with their terms.
The lower Court granted the motion without opinion.

The Court of Appeals for the Fourth Circuit, although
finding that the combination of elements recited in the
claims relied upon was present in respondents’ drying
house, read into the claims certain additional limitations
from the specification, and when so construed found that
said claims were not infringed by the respondents’ struc-
ture.

_——

3

The drying house disclosed in the patents in suit con-
sists of a tobacco drying barn of ordinary construction
provided with so-called flues, also of ordinary construc-
tion, said flues coasisting of large sheet metal pipes placed
about the floor of the barn, usually around the walls, and
also across the middle of the barn and connected to a
common smoke stack on the outside of the barn. Prior
to the invention of the patents in suit it was the common
practice to connect the flues to a furnace which was in
almost every instance designed for burning wood (R.
42). By the petitioners’ invention it was proposed
to do away with the wood-burning furnace which was
usually installed in the wall of the barn to be fired from
the outside, and in lieu thereof to heat the flues by oil
burners placed in the barn beneath openings cut in the
bottom of the flues.

The patentee contended that by his improvement the
individual burners could be spaced about the barn floor
in such manner that the flues would be uniformly heated,
as distinguished from the prior installations wherein the
flues were heated to a higher temperature at one side of
the barn adjacent the furnace than prevailed in the flues
at their ends connected to the stack. The drawings of
the patents in suit disclosed fifteen burners distributed at
spaced intervals’ beneath the flues.

The patents in suit also describe and claim the novel
method of connecting the individual flues to the burners,
namely, by placing the individual burners under holes in
the bottoms of the flues whereby the hot gases generated
by the burners pass directly into the flues, and the flues,
which are interposed between the burners and the over-
hanging tobacco, protect the tobacco from the direct radia-
tion of heat from the burners.

Claim one of Patent No. 1,811,980 is typical of the
claims in suit.

an ai

4

**1. Ina drying house, the combination with a sub-
stantially horizontal flue, extending adjacent to and
inside of the walls of said house; of a plurality of
spaced openings in the bottom of said flue; a fluid
fuel burner positioned under each of said openings;
and means for supplying fluid fuel to said burners.”’

The respondents’ structure charged to infringe com-
prises the usual tobacco barn with the flues arranged
around the walls of the barn and also across the middle,
and with two burners within the barn each of which is
placed beneath a hole on the under side of a cast iron elbow
forming part of the flue system. The two burners are so
placed with respect to the outside flue connections that
each burner heats one half of the flues.

The Court of Appeals, in holding that the claims were
not infringed, held that the word ‘‘plurality’’, although
including two, should be read in connection with the draw-
ings which show fifteen burners because, according to the
Cireuit Court of Appeals, a greater number than two
burners were required to obtain the ‘‘prime purpose’’ of
petitioners’ invention, namely, the uniform distribution of
heat.

‘*We have seen that the prime purpose of the patent
was to do away with a central heating system, with
its loss of heat and lack of uniformity of temperature
in various parts of the drying house, and to sub-
stitute a plurality of individual heating units spaced
apart and variously located under the flue inside the
warehouse so that the heat would be evenly distrib-
uted and easily controlled throughout the building’’
(Opinion, p. 7, R. 1438).

Although the Court of Appeals of the Fourth Circuit
in its opinion stated that “‘there is no genuine issue as
to any material fact’’, its decision that the claim must
be construed by reading into it limitations from the speci-

5

fication is itself a decision on an issue of material fact
with respect to which petitioners have been denied the
opportunity to present evidence. In the case at bar the
Court has gone beyond the terms of the claim in an attempt
to construe the claim as commensurate with what the
Court, on the meager record before it, believes to be the
patentee’s invention.

The Court’s conclusion as to what constitutes the pat-
entee’s invention is a decision on ‘‘an issue of material
fact’’—usually the most important fact issue presented in
a patent case.

This Court has frequently ruled, that even upon a trial
on the merits, the specification of the patent is not to be
resorted to in construing the claims either to enlarge or
restrict their scope.

Graver Tank & Mfg. Co., Inc., v. Linde Air Prod-
ucts Co., 336 U. 8. 271, 276.

“The Court of Appeals considered that because there
was nothing in the record to show that the applicants
for the patent intended by these claims to assert a
monopoly broader than nine metallic silicates named in
the specifications, the court should have construed the
claims as thus narrowed and limited by the specifica-
tions.

The statute makes provision for specification sepa-
rately from the claims and requires that the latter
‘shall particularly point out and distinctly claim the
part, improvement, or combination which he claims as
his invention or discovery.’ R. S. § 4888, as amended,
35 U. S. C. §33. It would accomplish little to require
that claims be separately written if they are not to be
separately read. While vain repetition is no more to
be encouraged in patents than in other documents, and
claims like other statements may incorporate other
matter by reference, their text must be sufficient to

6

‘particularly point out and distinctly claim’ an iden-
tifiable invention or discovery.

We have frequently held that it is the claim which
measures the grant to the patentee. See, for example,
Mileor Steel Co. v. Fuller Co., 316 U. S. 148, 145 [53
USPQ 268, 269-270]; General Electric Co. v. Wabash
Co., 304 U.S. 364, 369 [37 USPQ 466, 468-469] ; Altoona
Theatres v. Tri-Ergon Corp., 294 U. S. 477, 487 (24
USPQ 308, 313]. While the cases more often have
dealt with efforts to resort to specifications to expand
claims, it is clear that the latter fail equally to per-
form their function as a measure of the grant when
they overclaim the invention. When they do so to
the point of invalidity and are free from ambiguity
which might justify resort to the specifications, we
agree with the District Court that they are not to be
saved because the latter are less inclusive. Cf. General
Electric Co. v. Wabash Co., 304 U. S. 364, 373-374 [37

USPQ 486, 470]; see McClain v. Ortmayer, 141 U. S.
419, 424-425; Cimiotti Unhairing Co. v. American Fur
Refining Co., 198 U. S. 399, 410.’

In granting the motion for summary judgment for non-
infringement on an interpretation of the claims not in ac-
cord with the meaning of their plain terms, the Court of
Appeals for the Fourth Circuit followed a practice con-
demned by this Court in Sartor v. Arkansas Natural Gas
Corporation, 321 U. S. 620, and directly in conflict with the
ruling of the Court of Appeals for the Third Circuit in
Frederick Hart & Co., Inc. v. Recordgraph Corporation,
169 F. 2d 580, 581 (C. C. A. 3):

‘‘We are of the opinion that the District Court
erred. It is well-settled that on motions to dismiss
and for summary judgment, affidavits filed in their
support may be considered for the purpose of a@scer-
taining whether an issue of fact is presented, but they
cannot be used as a basis for deciding the fact issue.

7

An affidavit cannot be treated, for purposes of the mo-
tion to dismiss, as proof contradictory to well-pleaded
facts in the complaint. Farrall v. District of Columbia,
“Amateur Athletic Union, 1946, 80 U.S. App. D. C. 396,
153 F. 2d 647; United States v. Association of Ameri-
ean Railroads, D. C. Neb. 1945, 4 F. R. D. 510; 2
Moore’s Federal Practice (2nd ed. 1948) pages 2254,
2255.

It is also well-settled that on a motion to dismiss
the complaint must be viewed in the light most favor-
able to the plaintiff and that the complaint should not
be dismissed unless it appears to a certainty that the
plaintiff would not be entitled to relief under any state
of facts which could be proved in support of his claim;
further, no matter how likely it may seem that the
pleader will be unable to prove his case, he is en-
titled, upon averring a claim, to an opportunity to try
to prove it.”’

When the Court of Appeals of the Fourth Cireuit con-
cluded that in order for the claims in suit to be commen-
surate with the patentee’s invention it was necessary to
read into them limitations from the specifications, the
Court of Appeals should have terminated its consideration
and denied the motion.

Hart v. Recordgraph, supra, (p. 583):

“The foregoing clearly establishes the existence of

a fact issue with respect to what was actually said

by Murray to Weber. It was at that point that the

District Court’s consideration should have terminated

and Recordgraph’s motion denied. Instead, the Dis-

trict Court proceeded to decide the fact issue and

thereby committed error under the applicable prin-

ciples of law stated earlier in this opinion. It is im-

material that it decided the fact issue in Record-

- graph’s favor—the point is that it went beyond its

8

province to resolve any fact issue on a motion to dis-
miss or for summary judgment. Cf. Sarnoff v. Ciaglia,,
3 Cir., 1947, 165 F. 2d, 167.”

Even if it be assumed that the specification of the patent
may properly be resorted to for limitations not expressed
in the claims, the Court of Appeals erred in limiting the
claims to include the elements which it believed to be neces-
sary for carrying out the ‘‘prime purpose’’ of the inven-
tion, as the claims themselves, without such limitation,
define a novel sub-combination, namely, the construction
and arrangement of the individual burners with respect to
the flues, which is useful whether or not sufficient burners
are employed to attain the prime purpose of the inven-
tion. It is the established rule of this Court that such
combinations are patentable, and as the question of valid-
ity was not before the Court the claims should have been
construed as defining a novel and patentable sub-combina-
tion which is incorporated in the respondents’ structure:

Jurisdiction

The jurisdiction of this Court is invoked under Sec.
240(a) of the Judicial Code as amended by the act of Feb-
ruary 13, 1925, ¢. 229 (28 U. S. Code, See. 347).

The judgment of the Court of Appeals for the Fourth
Cireuit which petitioners seek to have reviewed was en-
tered on May 6, 1949 (R. 148) and petition for rehearing
denied on June 13, 1949 (R. 149).

Question Presented

The question presented is whether a Court, on a motion
for summary judgment for non-infringement, may read
into the claims additional limitations from the specifica-
tions in an attempt to construe the claims as commensurate
with the invention.

9

Reasons for Granting the Writ

The question presented by this petition is a procedural
question with respect to which there is direct conflict be-
tween the decision here and the rule of the Circuit Court of
Appeals for the Third Cireuit in Hart v. Recordgraph,
supra. The question has not been decided by this Court,
but should be, as motions for swmmary judgment in patent
eases are frequently presented in an effort by a litigant to
save the cost of litigation which in patent cases is usually
burdensome. While it is highly desirable that unnecessary
litigation expense be avoided, the procedure should not be
earried so far as to deny litigants their day in Court.

WHEREFORE YOUR PETITIONERS respectfully pray that a
writ of certiorari be issued to the United States Court
of Appeals for the Fourth Cireuit to the end that this
cause may be reviewed and determined by this Court;
that the judgment of the Court of Appeals for the Fourth
Cireuit be reversed; and that petitioners be granted such
other and further relief as may be proper.

CLARENCE M. FsHER,
W. Brown Morton,
Counsel for Petitioners.

New York, September 8, 1949.

BRIEF IN SUPPORT OF PETITION FOR
WRIT OF CERTIORARI

Opinion of Courts Below

The decision of the District Court appears at page 51
of the Record and is not reported. The opinion of the
Court of Appeals for the Fourth Circuit appears at page
136 of the Record and is reported in 174 F. 2d 147.

Jurisdiction

The jurisdictional statement appears in the accompany-
ing petition.

Statement of the Case

The essential facts of the case are stated in the accom-
panying petition and need not be related here.

Specification of Errors

1. The Court of Appeals for the Fourth Cireuit erred
in reading into claims 1, 2 and 3 of Patent No. 1,811,980
limitations not expressed therein.

2. The Court of Appeals for the Fourth Circuit erred
in not holding that as the language of claims 1, 2 and 3
of Patent No. 1,811,980 did not clearly exclude the accused
structure, the question of infringement could not be de-
cided on motion for summary judgment.

3. The Court of Appeals for the Fourth Circuit erred
in not holding that as claims 1, 2 and 3 of Patent No.
1,811,980 define a useful sub-combination, they are infringed

10

11

by respondents’ structure, regardless of the number of
burners employed.

4. The Court of Appeals for the Fourth Cireuit erred
in not holding that claim 3 of Patent No. 2,051,348 covers
an improvement on the structure of the individual burners
as used in the combination covered by Patent No. 1,811,980
and that that modification is incorporated in respondents’
burners.

ARGUMENT

The practice of reading into the claims from the speci-
fication or elsewhere limitations not therein expressed is
so clearly contrary to the ruling of this Court in Graver,
et al. v. Linde, supra, that further argument is super-
fluous. The claims are not ambiguous. The patentee
obviously chose the word ‘‘plurality’’ to designate the
number of burners in order that the claims should not
be limited in that respect.

The question of infringement is a question of law for
the Court only when the claims are read as they should
be, in accordance with the principles laid down in the
ease of Graver, et al. v. Linde, supra.

The purpose of claims is to define the metes and
bounds of the grant. If the language of the claims clearly
excludes the respondents’ structure the issue of infringe-
ment may be disposed of by motion for summary judg-
ment. If the language of the claims does not explicitly
exclude respondents’ structure, then the motion should
be denied because any construction of a claim at variance

12

with its plain language involves the determination of
fact issues. In the case at bar the Court has attempted
to construe the claims not in accordance with their terms,
but in accordance with what the Court believes to be the
scope of the patentee’s invention.

The scope of a patentee’s invention is the fundamental
question presented in any infringement case, to determine
which it is necessary to determine the state of the art at
the time of the patentee’s invention and the nature and
extent of the departure from existing practice, by a com-
parison of the patented structure with the existing appa-
ratus. To make this comparison on the basis of excerpts
from file wrappers of abandoned applications* (Opinion,
R. 142) and from statements in the specification that
central heating furnaces are old (Opinion, R. 141)**
is directly contrary to the established principle that fact
issues are to be determined on the basis of evidence sub-
mitted to the jury or to the trial Judge, in cases where
a jury is waived or is not required.

The claims define a patentable sub-combination.

Special Equipment Company v. Coe, Com’r. Pats.,
324 U. 8. 370:

‘‘The statutes permit, and it is the settled practice
of the Patent Office, many times sustained by this
Court, to allow claims to a combination and also its
sub-combinations. Railroad Co. v. Dubois, 12 Wall.
47, 60; Deering v. Winona Harvester Works, supra;

* The matter quoted £¥ém the opinion relates to a different heat-
ing system wherein no flues are employed.

** Incidentally, it is plain from the context that by “central heat-
ing furnaces” the patentee meant a furnace to which all the flues
were connected, and not a furnace located centrally in the barn.

——————————

13

Leeds & Catlin v. Victor Talking Mach. Co., 213 U. S.
301, 318; Altoona Theatres v. Tri-Ergon Corp., 294
U. S. 477, 487 (24 USPQ 308, 313) ; Mercoid Corp. v.
Mid-Continent Co., supra, 667 (60 USPQ at 25).”’

Applying this rule to the claims of Patent No. 1,811,980
here in suit, if it be novel to combine oil burners with flues
by providing ‘spaced openings in the bottom of the flue’’
and positioning ‘‘a fluid fuel burner”’ ‘‘under each such
opening’’ the patentee is entitled to claims to that sub-
combination whether or not the number of burners em-
ployed is sufficient to provide the uniform heating of the
entire flue area required to carry out the principal object
of his invention.

As this case is before the court on a motion for sum-
mary judgment on the sole ground of non-infringement,
the novelty of the combination recited in the claims is not
here in issue.

That this arrangement has utility quite apart from
the number of burners employed is self evident. The
burner is placed directly on the ground so that the natural
air currents carry the heated products of combustion into
the overlying flue which protects the tobacco from direct
radiation from the burners.

IV

Patent No. 2,051,348 is for the most part directed to
a type of heating system for tobacco barns wherein
the flues are discarded altogether. However, it shows
in Figs. 15-18 a modification of the flue system form-
ing the subject-matter of the earlier patent. Claim 3
here in suit is directed to this improvement. The ar-
rangement of burners and flues in Patent No. 2,051,348
is precisely the same as in Patent No. 1,811,980, the im-
provement consisting in placing around each burner an
enclosure or so-called ‘‘boxing’’ to prevent any escape

14

of the products of combustion into the barn (Pat. p. 3, col.
1, ll. 73 et seg. R. 97). The Court of Appeals questioned
the applicability of this claim ‘‘taken literally’’ to the
respondents’ structure because in this claim the plu-
rality of burners are described as arranged in series, etc.,
the Court apparently regarding ‘‘series’’ as implying
more than two. Petitioners are not in accord with this
view, and if this petition be allowed, will argue that the
language of the claim, taken literally, does not exclude
from its scope the respondents’ structure.

Conclusion

By the granting of the motion for summary judgment
petitioners have been denied the opportunity of estab-
lishing by competent evidence the nature and scope of
their invention and its appropriation by respondents.
Where the claims are so limited as to plainly exclude the
respondents’ structure, respondents may not be called to
account, even though they have incorporated petitioners’
invention in their drying houses, and the dismissal of the
suit on motion would have been in order, but as the claims
are not so limited, the motion should have been denied and
the case remanded to the lower Court to try the fact issues
presented by the pleadings.

WuHereroreE, petitioners earnestly pray that this peti-
tion for writ of certiorari be granted, the cause reviewed,
and the decree of the Court of Appeals for the Fourth
Circuit reversed.

Respectfully submitted,

CLareNcE M. FIsHER,
W. Brown Morton,
Counsel for Petitioners.
Dated: New York, N. Y.,
September 8, 1949.

——s

we

sais

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386416_2381%3A1. Public record. Not legal advice.